TMEP 501.06: Partial Assignments

This is the October 2015 Edition of the TMEP

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501.06    Partial Assignments

A trademark may be owned by two or more persons (see TMEP §803.03(d)), and a co-owner may assign his or her interest in a mark. Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of his or her interest in the mark to another party.

A trademark owner may also assign a separate portion of a business, together with the good will and trademarks associated with that portion of the business, but retain rights in the mark for uses pertaining to another part of the business. See VISA, U.S.A., Inc. v. Birmingham Trust Nat'l Bank, 696 F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982), cert. denied, 464 U.S. 826, 220 USPQ 385 (1983). Accordingly, one or more trademarks of a company can be validly assigned if the assignor transfers the good will associated with only some of the goods/services on which that mark appears. After a registration has been assigned with respect to only some of the goods/services, both owners must file the necessary renewal applications and affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k to maintain the registration. If only one party files, only those goods/services in the registration for which that party owns the mark are continued or renewed. See TMEP §§1604.11 and TMEP §1613.05 regarding affidavits of continued use or excusable nonuse, and TMEP §§1606 and 1614 regarding renewal.

A trademark owner may not use an assignment to impose geographic restrictions on a registration. This must be done by way of a concurrent use proceeding before the Trademark Trial and Appeal Board, or pursuant to a final determination by a federal court. 15 U.S.C. §1052(d). See TMEP §1207.04 and Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) Chapter 1100 regarding concurrent use registration. However, the Assignment Recordation Branch of the USPTO will record an assignment purporting to transfer rights in an unrestricted registration for less than the entire United States, because it is a transfer that may affect title to the registration. As noted in TMEP §503.01(c), the Assignment Recordation Branch does not examine the substance of documents submitted for recording. The act of recording the document is not a determination of the validity or effect of the purported assignment and does not create a concurrent use registration.

A trademark owner who files a partial assignment is strongly encouraged to file a separate request to divide so that the USPTO can more effectively track and administer applications and post registration filings, and ensure that USPTO records accurately reflect current ownership information. In pending applications in which a partial assignment and a request to divide are filed, the ITU/Divisional Unit will process the request to divide and ensure that the USPTO records reflect current ownership information. Because the assignment records of the parent application do not appear in the newly created child application, the ITU staff will place a copy of the Trademark Assignment Abstract of Title for the parent application in the trademark records of the child application. The abstract will be viewable via the Trademark Image Capture Retrieval System (“TICRS”) and the Trademark Status and Document Retrieval (“TSDR”) portal on the USPTO website at http://tsdr.uspto.gov/. The assignment information in the parent application will remain accessible via the Assignment database on the USPTO website at http://assignments.uspto.gov/assignments. After the request to divide is processed and the child application is created, any new recordations in the child application will appear in the Assignment database. See TMEP §1615 regarding requests to divide registrations in which ownership has changed with respect to some but not all of the goods/services, and TMEP §1110 regarding request to divide pending applications.